Things You Should Know about Working with ORNL
UT-Battelle manages and operates ORNL under a contract with the U.S. Department of Energy (DOE). Because ORNL is a government-owned facility, and because most of the intellectual property licensed by UT-Battelle is federally funded, some of our business policies and licensing terms are different from those typically found in the private sector.
Fairness of Opportunity
It is DOE policy to ensure potentially interested partners have equal opportunities to seek commercial licenses for intellectual property developed with DOE funds. Because of this Fairness of Opportunity obligation, we prefer to execute nonexclusive licenses whenever possible. At the same time, we recognize that investors in early-stage technologies may require exclusivity in a field of use. In this case, UT-Battelle must publicly announce the availability of technologies for licensing before executing an exclusive license.
Small Business Preference
As a national laboratory contractor, UT-Battelle is expected to actively seek to attract small business licensees. Whenever possible, small businesses are given preference over other applicants for licenses.
Government March-In Rights
Under 35 USC 203, the U.S. Government retains the right to force a license to a patent which stemmed from federally funded research dollars, even if that patent has been exclusively licensed to another party. While this non-negotiable provision is often a source of concern to prospective licensees, in practice the government has never exercised this right.
Government Use Rights
All UT-Battelle licenses must grant the U.S. Government nonexclusive rights to use intellectual property developed at the ORNL. This means UT-Battelle cannot collect royalty payments from the licensee for products sold to the U.S. Government and cannot prevent companies other than the licensee from manufacturing products based on the licensed intellectual property.
Under the Bayh-Dole Act, products based on licensed intellectual property developed with federal funding must be substantially manufactured in the United States. The intent is to ensure the United States reaps the benefit of taxpayers' investment in research and development. In some cases, waivers may be granted by the funding agency (typically the DOE for ORNL technologies) if domestic manufacture of the product is not commercially feasible or if attempts to find a U.S. manufacturer have been unsuccessful.
UT-Battelle licensees must agree to adhere to export controls designed to protect items and information important to the United States. Export Controls refer to government rules and regulations that govern the transfer of commodities (equipment, hardware, or material), technologies (technical data, information, or assistance), and software/codes (commercial or custom) to non-U.S. entities or individuals wherever the transfer may take place.